[Panel 9] WG10 Chapter on Parallel USPTO Proceedings – “Stage Three”

Friday, March 29, 2019 - 11:30am to 1:00pm
Panel Description: 

There have been numerous significant changes to PTAB practice since WG10 last edited its Stage 1 and Stage 2 WG10 Parallel USPTO Proceedings documents in July 2017. Just a few are listed below:

  • Supreme Court’s SAS decision and PTAB’s resulting change to a binary approach for institution decisions
  • Updated Trial Practice Guide released August 2018
  • Move from BRI to Phillips claim construction standard
  • Applications in Internet Time, LLC v. RPX Corporation decision from the Federal Circuit and its impact on PTAB RPI/Privy decisions
  • PTAB’s developing practice of discretionary denials under 325(d) and 314(a)
  • Proposed changes to PTAB motion to amend practice

This drafting team will combine the existing WG10 Parallel USPTO Proceedings Stage One and Stage Two publications into a single publication, make current the content therein, and propose new best practices for improving efficiency and collaboration among the Federal Courts addressing these issues.


Sterne, Kessler, Goldstein & Fox PLLC

Washington, DC, USA

Dialogue Leaders

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Reston, VA, USA

Ropes & Gray LLP

Washington, DC, USA

Akin Gump Strauss Hauer & Feld LLP
USPTO, Patent Trial and Appeal Board